UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. In Re: U.S. Patent 7,191,233 : Attorney Docket No

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD In Re: U.S. Patent 7,191,233 : Attorney Docket No Inventor: Michael J. Miller : Filed: September 17, 2001 : Claimed Priority: September 17, 2001 : Issued: March 13, 2007 : IPR No. Unassigned Assignee: Title: CRFD Research, Inc. System for Automated, Mid-Session, User-Directed, Device-to- Device Session Transfer System Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, Virginia Submitted Electronically via the Patent Review Processing System PETITION FOR INTER PARTES REVIEW OF CLAIMS 1, 4, 23 AND 25 OF U.S. PATENT NO. 7,191,233 UNDER 35 U.S.C AND 37 C.F.R ET SEQ.

2 TABLE OF CONTENTS LIST OF EXHIBITS 1001 U.S. Patent No. 7,191,233 by Michael J. Miller entitled System for Automated, Mid-Session, User-Directed, Device-to-Device Session Transfer System (the 233 Patent ) File History for U.S. Patent No. 7,191, Declaration of Mark Claypool, Ph.D. (Exh in Case No. IPR ) U.S. Patent No. 6,963,901, Bates, et al., Cooperative Browsers Using Browser Information Contained in an Message for Reconfiguring, ( Bates ) filed July 24, 2000 and issued November 8, Mun Choon Chan et al., Next-Generation Wireless Data Services: Architecture and Experience, IEEE Personal Communications, Feb. 1999, pp ( Chan ) Bo Zuo, Mobile ID Protocol: A Badge-Activated Application Level Handoff of a Multimedia Streaming to Support User Mobility, Master s Thesis, Univ. of Ill. at Urbana-Champaign, Aug ( Zou ) Monet Research Group Publications, Feb. 4, Excerpts from Merriam-Webster s Collegiate Dictionary, 10th Ed., Excerpts from Microsoft Computer Dictionary, 4th Ed., U.S. Pat. App. Pub. No. 2002/ to Belfiore, et al. RFC 959, File Transfer Protocol, Oct RFC 821, Simple Mail Transfer Protocol, Aug RFC 2821, Simple Mail Transfer Protocol, Apr i

3 RFC 918, Post Office Protocol, Version 1, Oct RFC 937, Post Office Protocol, Version 2, Feb RFC 1939, Post Office Protocol, Version 3, May Milojicic, Dejan et al., Process Migration, ACM Computing Surveys, Vol. 32, No. 3, Sept. 2000, pp Declaration of W. Leo Hoarty. Thomas Phan et al., A New TWIST on Mobile Computing: Two- Way Interactive Session Transfer in the Proceedings of the Second IEEE Workshop on Internet Applications (WIAPP 2001). IEEE Computer Society Selected pages: Table of Contents, pp ( Phan WIAPP ) Thomas Phan et al., Handoff of Application Sessions Across Time and Space in volume 5 of the IEEE International Conference on Communications (ICC 2001). Institute of Electrical & Electronic Engineers Selected pages: Table of Contents, pp ( Phan ICC ) Rajive Bagrodia, Mario Gerla, Songwu Lu, Richard Meyer, Daniel J. Valentino, and Lixia Zhang, Challenges: Supporting Nomadic Healers, which was publically available at least by August 31, 2000 at ojects/imash/rm-mobicomm00.html, as captured and archived by the WayBack Machine at ojects/imash/rm-mobicomm00.html) ( Bagrodia ) Complaint, Dragon Intellectual Property, LLC v. DISH Network Corporation et al., No. 14-CV-064 (DED) 1023 Affidavit of Service of Complaint on DISH Network Corporation and DISH Network L.L.C Declaration of John Day. ii

4 1025 CRFD s Initial Claim Chart - Infringement Contentions for U.S. Patent No. 7,191, Telecommunications Information Networking Architecture Consortium, Service Architecture, Version 5.0, June 16, iii

5 I. MANDATORY NOTICES, STANDING, AND FEES Real Party in Interest: DISH Network Corporation, DISH DBS Corporation, DISH Network L.L.C. (collectively, DISH ), EchoStar Corporation, and EchoStar Technologies L.L.C. (collectively, EchoStar ) (DISH and EchoStar collectively Petitioner ) is the real party in interest. DISH is a provider of direct broadcast satellite services. Related Matters: The 233 Patent is currently involved in a pending lawsuit involving petitioner entitled CRFD Research, Inc., v. DISH Network Corporation et al., United States District Court for the District of Delaware, Case No. 14-CV- 064 (GMS) (the District Court Action ). See Ex The District Court Action asserts U.S. Patent No. 7,191,233. See Ex Three other petitioners have filed a petition for Inter Partes review numbered IPR , IPR , and IPR Lead Counsel and Request for Authorization: Pursuant to 37 C.F.R. 42.8(b)(3) and 42.10(a), Petitioner designates the following: Lead Counsel is Eliot D. Williams (Reg. No. 50,822) of Baker Botts L.L.P.; Back-up Counsel is G. Hopkins Guy, III (Reg. No. 35,886) of Baker Botts L.L.P. Service Information: Service information is as follows: Baker Botts L.L.P., 1001 Page Mill Rd., Palo Alto, CA Tel ; Fax Petitioner consents to service by electronic mail at eliot.williams@bakerbotts.com and hop.guy@bakerbotts.com. A Power of 1

6 Attorney is filed concurrently herewith under 37 C.F.R (b). Certification of Grounds for Standing: Petitioner certifies under 37 C.F.R (a) that the 233 Patent is eligible for inter partes review and that Petitioner is not barred or estopped from requesting inter partes review on the grounds set forth herein. Fees: The Office is authorized to charge the fee set forth in 37 C.F.R (a) to Deposit Account No as well as any additional fees that might be due in connection with this Petition. II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED Petitioner challenges claims 1, 4, 23 and 25 of U.S. Patent No. 7,191,233 by Michael J. Miller ( the 233 Patent ), titled System for Automated, Mid-Session, User-Directed, Device-to-Device Session Transfer System. See Ex Only these four claims are asserted against Petitioner in the pending District Court Action. A. Publications Relied Upon Petitioner relies upon the following patents and publications: Exhibit U.S. Patent No. 6,963,901, Bates, et al., Cooperative browsers using browser information contained in an message for reconfiguring, ( Bates ) filed July 24, 2000 and issued November 8, Bates is prior art under at least 35 U.S.C. 102(e) because it was filed on July 24, 2000 and issued into a U.S. patent on November 8,

7 Exhibit Chan, Mun Choon et al., Next-Generation Wireless Data Services: Architecture and Experience, IEEE Personal Communications, Feb. 1999, pp ( Chan ). Chain is available as prior art under 35 U.S.C. 102(b) because it was publicly available at least as early as Feb Exhibit Thomas Phan et al., Handoff of Application Sessions Across Time and Space in volume 5 of the IEEE International Conference on Communications (ICC 2001). Institute of Electrical & Electronic Engineers Selected pages: Table of Contents, pp ( Phan ICC ). Phan ICC is available as prior art under 35 U.S.C. 102(a) because it was publicly available at least as early as July 31, Exhibit Thomas Phan et al., A New TWIST on Mobile Computing: Two-Way Interactive Session Transfer in the Proceedings of the Second IEEE Workshop on Internet Applications (WIAPP 2001). IEEE Computer Society Selected pages: Table of Contents, pp ( Phan WIAPP ). Phan WIAPP is available as prior art under 35 U.S.C. 102(a) because it was publicly available at least as early as August 18, B. Grounds For Challenge Petitioner requests cancellation of the claims on the following grounds: 1. Claims 1 and 23 are anticipated by Bates. 2. Claims 1, 4, 23 and 25 are obvious over Bates in view of Chan. 3. Claims 1, 4, 23 and 25 are anticipated by Phan ICC. 3

8 4. Claims 4 and 25 are obvious over Phan ICC in view of Phan WIAPP. III. OVERVIEW OF THE 233 PATENT A. Summary of the Claimed Subject Matter The 233 Patent is directed to a system and method for session management in a distributed computer network. Ex at 3: More particularly, the invention relates to a user-directed transfer of an on-going software-based session from one device to another device. Id. at 1:8-11. The alleged invention can supposedly be utilized in any session-oriented environments. Id. at 2: The main objective of the alleged invention is to allow a user of a computing apparatus to engage in an activity on that apparatus (such as browsing the Internet or instant messaging on a desktop) and then transfer information about the computing session to a second computing apparatus (such as a laptop), so that the user can pick up the session where he or she left off. In order to effect this transfer, the 233 patent discloses a session history, which moves from the first device to the second device via a session transfer module. The 233 patent operates over a conventional client-server infrastructure that was well known in the art at the time the application that led to the 233 patent was filed. Ex. 1003, 25. Figure 1 of the 233 patent below depicts an illustrative communication network 100 that has several components, including wireless and wired client devices 120 and 125, respectively, and a session server

9 According to the 233 patent, the clients may include conventional communication-enabled devices such as desktop and laptop computers, personal digital assistants, enhanced text pagers, wireless mobile phones, and wireless handheld devices. Ex. 1001, 1: As depicted in Figure 2 below, the session server 145 consists of several components, including a series of modules, and most significantly a session transfer module

10 The primary function of the session transfer module is to participate in the transfer of an on-going session from a first device to a second device. It also may be configured to perform a variety of tasks. Id. at 3:17-4:1. The 233 patent, however, does not provide any details of how the session transfer module is actually configured to perform any task. As demonstrated herein, all features of the Challenged Claims were well known at the time the application leading to the 233 patent was filed. B. Prosecution History of the 233 Patent The application leading to the 233 patent was filed on September 17, 2001 with 45 claims. The Patent Office issued a first Office Action on March 28, 2005, rejecting claims 1-3, 5-14, 16-25, and under 35 U.S.C. 102(e) as being anticipated by U.S. Pat. App. Pub. No. 2002/ to Belfiore et al. 6

11 ( Belfiore ; Ex. 1010). Ex. 1002, p. 66. Among these rejected claims were all four independent claims, claims 1, 13, 24 and 35. Independent claim 1 as originally filed is representative of the rejected independent claims: A method for redirecting an on-going software based session comprising: conducting a session with a first device; specifying a second device; discontinuing said session on said first device; and resuming said session on said second device. Id. at 21. In an August 8, 2005 Amendment, the Applicant amended the four rejected independent claims as well as certain dependent claims, and canceled claims 22 and 44. Id. at 74. This Amendment introduced a session history into each of the independent claims. Importantly, the Applicant also added the limitation that the session history should move from the first device to the session transfer module during a transition of said session. The Applicant s two amendments to claim 1 are representative in this regard: transmitting a session history of said first device from said first device to a session transfer module during a transition of said session from said first device to said second device and resuming said session on said second device with said session history. Id. at 75. The timing of the handoff of the session history from the first device to the 7

12 session transfer module was crucial to the Applicant s argument over Belfiore. The Applicant argued that none of the rejected claims as amended were anticipated by Belfiore because Belfiore failed to disclose transmitting a session history during the transition of a session from the first device. Id. at (underline in original). The Patent Office was not persuaded, and issued a second rejection on November 2, Claims 1-3, 5-14, 16-21, 23-25, 27-36, and 45 were again rejected under 35 U.S.C. 102(e) as being anticipated by Belfiore. Id. at 95. The Patent Office found that Belfiore disclosed the amended claims, including the new requirement that the transfer of the session history take place during the transition of the session. Id. The Patent Office noted that Belfiore discloses transmitt[ing] the session history during transition of said session, i.e., the session history is transmitted to the server up to the point the session is to be transferred thereby ensuring a current and seamless session transfer. Id. at 99. In a response dated January 27, 2006, the Applicant regurgitated its argument that Belfiore failed to teach the transmission of a session history during a transition of a session. Id. at The Patent Office remained unconvinced. A third Office Action was issued on July 3, 2006, again finding that Belfiore discloses transmitting a session history during a transition of a session. Id. at 140. Although Applicant had not advanced an alternative argument, the Office Action noted that: 8

13 It appears the applicant believes the claim language requires the session to transition after the session on the first device is discontinued. However, the claim language is clear that the transition occurs prior to discontinuing the session on the first device. Id. at 145 (emphasis in original). Taking a cue from the Patent Office, the Applicant amended the rejected claims to include the limitation that the transmission of the session history from the first device to the session transfer module occurred after discontinuation of the session on the first device. The amendment to independent claim 1 is representative, and reads as follows: transmitting a session history of said first device from said first device to a session transfer module after said session is discontinued on said first device during a transition of said session from said first device to said second device. Id. at 151. The Applicant emphasized this amendment in its argument over Belfiore, stating that, to more clearly distinguish over Belfiore, the Applicant s claims are amended herein to recite a session history that is transmitted after a session is discontinued on a first device. The Examiner acknowledged that Belfiore discloses a session history that is transmitted during the session... and not after a session is discontinued on the first device[.] Id. at (emphasis and ellipsis in original). 9

14 A Notice of Allowance was mailed on January 17, Id. at 172. The prosecution history indicates that the alleged novelty of issued independent claims 1, 13, 23 and 34 is that the session history is transmitted from the first device to the session transfer module after the session is discontinued on the first device. However, the timing of this transfer (along with all of the other features of all Challenged Claims) was not novel. Every feature of the Challenged Claims is disclosed in the prior art. IV. SUMMARY OF PRIOR ART AND REFERENCES RELIED ON The 233 patent discloses nothing more than what was well known in the art prior to the filing of the application which led to the 233 patent. None of the prior art discussed below was considered by the Patent Office during prosecution of the 233 patent. These prior art references are directed to the same field as the 233 patent (session transfer) and are designed to solve the same problem as the 233 patent (allowing session transfer between computers to enable a user to begin a session on one computer and continue the session on another computer). The reference(s) in each ground disclose all elements of the Challenged Claims enumerated in that ground, arranged in the prior art as in the claims. Secondary considerations do not support a finding of nonobviousness. There is no evidence that the Patent Owner will be able to show any secondary consideration. Should the Patent Owner put forth any allegations regarding secondary considerations, Petitioners respectfully request an opportunity to 10

15 respond. A. Brief Summary of Bates Bates teaches a system and method for cooperative web browsing between computers in which a web browsing session is transferred from a first computer to a second computer via one or more servers (such as network server 108 and server 102) using browser information. Ex. 1004, 3:4-7, 9:24-30, 10:51-11:8, FIG. 1. The browser information includes information generated during a browsing session on the first client computer and may be limited to the information generated during a particular session. Id. at 4:61-63, 6:11-13, 7: Bates also discloses a session transfer process. In particular, a user conducts a web browsing session on a first client computer, such as reading messages posted on a bulletin board, inputting data into a web page or performing 11

16 some other task during a browsing session. Id. at 10: The user also selects another computer on which the user will ultimately resume the session: [a] user may input to the field 302 an address for a computer (e.g., a remote client computer 106) to which the browser information contained in the sending computer s buffer 242 will be sent. Id. at 5: When the user is to switch computers for example, because the user wants to continue the session elsewhere the user terminates the session on the first computer: prior to completing the task, the user may be required to terminate a browsing session. Id. at 10: When this occurs, the necessary information may be collected and transmitted to a remote computer containing another browser program. Id. at 10: The browser information is transmitted to the remote client computer via the network 104 [including network servers 108] and the server 108 (FIG. 1). Id. at 9: For example, the browser information may be transmitted via (using protocols such as the Simple Mail Message Protocol (SMTP) or the Post Office Protocol (POP)) or via the File Transfer Protocol (FTP). Id. at 3: Each of these protocols utilizes a client-server model to enable the browser information to be transferred from a first client computer to a second client computer via a server. Ex. 1003, 99, The server necessarily includes both hardware and software to perform the required functions. Id. at 99. Finally, [t]he browser information is then used to reconfigure the browser 12

17 program of the remote computer and restore the user to where he or she left off during the terminated browsing session. Ex. 1004, 10:65-11:1. Thus, in the case of a user reading a message board, the browser displays the message which was being read when the browsing session was terminated. Id. at 11:1-4. In the case of inputting data to a web page, the web page is rendered with the data that was input prior to the termination of the session contained therein. Id. at 11:4-6. In effect, the present invention preserves the current status of a browsing session to be resumed at another location. Id. at 11:6-8. B. Brief Summary of Chan Chan discloses a client-server architecture in which an application session [may] persist across network and device handoffs. Ex. 1005, p. 4, FIGs Such devices could include an office desktop computer, a handheld personal computer or a personal digital assistant. Id. at 2-3. Chan also envisions that a session transfer module will take part in the transfer process. As shown in Figure 4 below, Chan utilizes a server including a series of modules interposed between clients that facilitate session transfer. Id. at 6-7, FIG. 4. Among other things, the server modules receive the state information (including session states ) from the first device and transfer it to the second device. Id. at

18 The transferred state information / session state constitutes a session history, as it may include bookmarks, history, and cookies [which] should be preserved when the user migrates to different devices; cache objects can migrate from server to device or vice versa, depending on the environment. Id. at 7. C. Brief Summary of Phan ICC Phan ICC is part of the Interactive Mobile Application Support for Heterogeneous Clients project ( imash ) conducted at UCLA. The original concept for the project was published at least by August 31, 2000 if not before. Ex imash is framework of such an adaptive middleware infrastructure, initially for healthcare workers. Its objective is to provide the capability for real- 14

19 time, multimedia communication, such that a physician can access, on the move, the patients record and related information, and can migrate ongoing application sessions seamlessly to multiple platforms that may range from a high performance diagnostic workstation in the physician s office to hand held PDAs in the examination room. Id. at 1. imash provided that a physician may migrate ongoing applications sessions seamlessly to different platforms that range from a high performance diagnostic workstation in the physician s office to handheld PDAs in the examination room. Id. imash also utilized a middleware infrastructure to help bridge the gap between application servers and the large numbers of nomadic end users. Id. The basis of the imash architecture is the distributed middleware servers. Id. at 2 (emphasis in original). When a user moves an on-going application session from one device to another, middleware servers act as a home for the application state (including active connections, cached data, etc.) to facilitate migration between devices. Id. at 3. Phan ICC relates to the field of mobile computing and focuse[s] on the architecture and protocols that enable a user to experience uninterrupted and seamless data access across multiple devices by performing application session handoff. Ex. 1020, 1 (emphasis in original). More particularly, Phan ICC concerns itself specifically with imash s session transfer amongst heterogeneous client devices in a hospital environment. Phan ICC utilizes a middleware server layer position between existing application servers and multiple clients to make 15

20 session transfer transparent to the user. Id. at Abstract; FIG. 1. According to Phan ICC, [a]ny client application executing our Middleware-Aware Remote Code [ MARC ] library can save and restore its session by interacting with a middleware server. Phan ICC discloses [a]s a proof of concept the transfer of bookmarks, history, web cache, and user preferences with the Mozilla open source web browser. Id. at 1. For example, [a] user participating in our network will be able to move between an office desktop, a PDA, a laptop, and a home desktop with a continuous view of his or her application data. Id. The middleware server consists of hardware and software that perform a variety of functions, including, e.g., facilitating migration of an on-going application session between devices using an application state. Id. at 3.2; FIG. 2. The application state (also called a session state) is transferred from the first client to the middleware when the user exits the session. Id. at 4.1. A user may then continue the session on a second client using the state. Id. Notably, Phan ICC considers a session state to be the bookmark list, the history file, the user preferences, and the cache of web pages. Id. D. Brief Summary of Phan WIAPP The Phan WIAPP publication is also based on the imash project discussed above. Ex. 1019, at 1. The Phan WIAPP authors have identified an important Two-Way Interactive Session Transfer (TWIST) behavior for communication between heterogeneous clients and servers. Id. at Abstract. In 16

21 Phan WIAPP, [a] two-way, interactive session transfer involves the handoff of possibly modified data from one client to another. The transferred data could have originated from the [Application Server (AS)], in which case the handoff mechanism semantics become more rigid: if data from the AS is modified at C1, then upon handoff this data is not immediately saved back to the AS (in order to be reinstantiated at C2). Id. at 3.3. Phan WIAPP explains the role of a middleware server (MWS) in such a handoff: this state is delivered to the MWS, which sends it to the second client, thereby shielding the AS from the handoff details. This duty performed by the MWS grants us two important accommodations: (1) we do not have to modify the AS, and since it could very well be a legacy system, altering it to implement a handoff mechanism could be prohibitively difficult; and (2) the AS is allowed to maintain its API and perform its operations without having to deal with any additional complexity of supporting handoff. Id. Both Phan ICC and Phan WIAPP involve transfer of application information from device to device in a seamless fashion in order to prevent loss of data during session transition. Since the transfer included patient data in a hospital environment, the need for seamless transfer was crucial. E. Brief Summary of Zou Another reference that demonstrates that session transfer techniques were well-known as of the filing date of the 233 Patent is Zou. Zou is a Master s Thesis entitled Mobile ID Protocol: A Badge-Activated Application Level 17

22 Handoff of a Multimedia Streaming to Support User Mobility. Ex Zou discloses a client-server architecture for the handoff of multimedia streaming applications between devices. Ex. 1006, at 4, 14-16; Ex. 1003, Figure 1 illustrates the overall architecture for application-level handoff of multimedia streaming: Generally, a user begins playing a movie session on a first device. The user at the first device stops or interrupts the session and the session state is stored at a central server. The user then uses the session state to later resume the session on a different device or on the same device. Ex. 1006, at 16-20; Ex. 1003,

23 Figure 2 below illustrates this process. Zou further describes NetChaser, which is a mobile agent based infrastructure for supporting personal mobility in accessing Internet services. NetChaser s mobile agents form a wrapper between applications and network, [and] assists user by following them when they change working terminals. Ex. 1004, at 4. Furthermore, [t]he NetChaser uses agent mobility to track user movement, which allows sessions to be suspended an d then resumed from another terminal. 19

24 Id. V. CLAIM CONSTRUCTION In an IPR, a claim is given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). In this IPR, claim terms must be construed and viewed from the perspective of one of ordinary skill in the art at the time the application which led to the 233 patent was filed. For purposes of this proceeding only, Petitioners propose constructions under this standard. 1 Petitioners submit that any terms not specifically construed in this section should be given their broadest reasonable plain and ordinary meaning. A. Level of Ordinary Skill in the Art A person of ordinary skill in the art would have either (1) a Bachelor of Science in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field as well as at least 2 years of academic or industry experience in the software field or (2) at least four years of industry experience in the field of the 233 Patent. Ex. 1018, B. Session (claims 1, 4, 23, and 25) A session should be construed as data exchanged during the time period 1 Petitioner reserves the right to seek different claim constructions than those determined or sought in a different forum (e.g., the District Court Action) that applies different standards of proof and analysis. 20

25 when devices maintain an application service in a distributed computer network. The 233 patent specification generally relates to session management in a distributed computer network. Ex. 1001, 1:5-7. The 233 patent discloses a communication network 100 (also referred to as computer network 100) that includes an application services network 105, an application server 140 and clients 120 and 125. Id. at 4:4-11, 5:21-33, FIG. 1. The application services network provide services to the clients for data exchange including session-based services such as instant messaging, database querying, and other similar services. Id. at 5: The application server in turn provides the supporting applications. Id. at 5: Each of the application services exists between two points in time. Ex. 1018, 52 (citing Ex. 1003, 61-67); Ex. 1009, p. 3. This definition is consistent with the way session is used in the 233 patent as understood by one of ordinary skill in the art. Ex. 1018, 52 (citing Ex. 1003, 61-67). C. Device (claims 1, 4, 23 and 25) A device should be construed as a computing apparatus. This construction is supported by the 233 patent. The 233 patent provides several examples of devices, all of which are capable of computing: laptop computers, wireless pagers, enhanced text pagers, wireless handheld devices, personal digital assistants, wireless mobile phones with integrated displays, etc. Ex at 1: This construction is also consistent with the 233 patent s Technical Field, which states that the invention generally relates to session management in a 21

26 distributed computer network. Ex. 1001, 1:7-8; Ex. 1018, 52. D. Discontinuing (claims 1, 4, 23, and 25) Discontinuing should be construed as terminating or otherwise stopping, with the ability to be resumed. The fundamental purpose of the 233 patent is to enable the transfer of an on-going software based session from one device to another. Ex. 1001, 1:9-11, 2:3-5. The 233 patent allegedly accomplishes this transfer by discontinuing a session on the first device and then resuming the session on a second device. Id. at 2:6-8. When the session is discontinued, it is terminated or otherwise stopped, but in the context of the 233 patent, it must possess the ability to be resumed on the second device, or the goal of the alleged invention could not be realized. Ex. 1018, 52, Ex. 1003, Thus, this definition is consistent with the plain meaning of discontinuing in the context of the 233 patent and is supported by the 233 patent. Id.; Id. at 73. E. Session history (claims 1 and 23) A session history should be construed as a record generated about a session. It is well understood that a history consists of a record generated about an activity or event. Ex. 1003, 76; Ex. 1008, p. 4. Here, the term session qualifies history, and thus a session history is a record generated about a session. Ex. 1003, This definition is consistent with the way this term is used in the 233 patent as understood by one of ordinary skill in the art. Id.; Ex. 1018, 52. For example, during session transfer, the session transfer 22

27 module may transmit the reformatted session history the redirected device such that the user is able reconstruct the session on the redirected device. Ex. 1001, 3:43-4:3. F. Session transfer module (claims 1 and 23) A session transfer module should be construed as hardware and/or software that participates in the transfer of the session. As its name implies and as the specification makes clear, the session transfer module may be configured to perform a variety of functions in support of session transfer between devices. Ex. 1001, 3:6-4:3. However, although the session transfer module is mentioned 52 times in the 233 patent, the 233 patent does not provide any details about its specific components or how it may be configured to perform any function. A person of ordinary skill would understand that in the context of the 233 patent, the broadest reasonable construction of session transfer module includes hardware, software residing on hardware, or a combination of the two, and that it must participate in session transfer. Ex. 1018, 52; Ex. 1003, G. After (claims 1 and 23) After should be construed as later in time. This term does not appear in the 233 patent, and was added to the claims at the Examiner s prompting to overcome the prior art of record. Ex. 1002, p The broadest reasonable construction of after is later in time. Ex. 1018, 52; Ex. 1003, 85-88; Ex. 1008, p

28 VI. A REASONABLE LIKELIHOOD EXISTS THAT THE CHALLENGED CLAIMS ARE UNPATENTABLE Pursuant to 37 C.F.R (b)(4)-(5), all of the challenged claims are unpatentable for the reasons set forth in detail below. A. Ground 1: The 233 Patent Claims 1 and 23 are anticipated by Bates As demonstrated below, Bates anticipates claims 1 and Claim 1 Bates 1[p] 1. A method for redirecting an ongoing, software based session: See, e.g., Bates, Ex at 1:63-66, 3:4-7, 5:29-46; 10:51-11:8: Bates discloses a method, apparatus and article of manufacture configured to support sharing of browser information between at least two browser applications where browser information may be transmitted to a remote computer to restore the user to where he or she left off during [a] terminated browser session Bates discloses that the sharing is implemented in software or signal-bearing media. Ex. 1004, 5:29-46; Ex. 1003, 45-46; Ex. 1018, Claim 1 Bates 1[a] conducting See, e.g., Bates, Ex. 1004, 8:55-57: FIG. 7 shows a method a session with a for operating client computer 106 (referred to herein as local first device; client computer or sending client computer ) during a browsing session See, e.g., Id., 10:58-11:8: consider a user inputting data into a web page or performing some other task during a browsing session See, e.g., Id., 4:62-67: In one embodiment, browser information includes information generated during a browsing session, i.e., a period of time when the browser 240 is executing on a client computer 106 and a network connection exists between the client 106 and the network 104 allowing a 24

29 233 Claim 1 Bates user to traverse network addresses corresponding to the servers. See, e.g., Id., FIG. 7. Bates teaches operating a browsing session on a first client computer. Ex. 1004, 8:55-57, 4:58-5:6; FIG. 7. Thus, Bates discloses conducting a session on a first device, i.e., operating a first client computer during a browsing session. Ex. 1003, 46-47; Ex. 1018, Claim 1 Bates 1[b] specifying See, e.g., Bates, Ex. 1004, 5:52-56: a second device, A user may input to the field 302 an address for a computer (e.g., a remote client computer 106) to which the browser information contained in the sending computer s 25

30 233 Claim 1 Bates buffer 242 will be sent. See, e.g., Bates, Ex. 1004, FIG. 3. Bates discloses that a user may select a remote client computer to which the session and browser information may be transferred. Ex. 1004, 5:52-56; FIG. 3. Identifying the address for the second computer specifies a second computer to which browser information is sent. Ex. 1003, 122; Ex. 1018, Bates explains that multiple addresses could be entered, permitting the session to be sent to multiple computers. Ex. 1004, 5: Claim 1 Bates 1[c] discontinuing said session on said first device, See, e.g., Bates, Ex at 10:58-11:1: For example, consider a user reading messages posted on a bulletin board, inputting data into a web page or performing some other task during a browsing session. Prior to completing the task, the user may be required to terminate the browsing session. In such an event, the necessary browser information may be collected and transmitted to a remote computer containing another browser program. The browser computer is then used to reconfigure the browser program of the remote computer and restore the user to where he or she left off during the terminated session. See, e.g., Bates, Ex. 1004, 7:66-8:5: 26

31 233 Claim 1 Bates If a second checkbox 502 b, entitled at shutdown, is selected, the browser information is transmitted when the client computer 106 is shutdown. If a third checkbox 502 c, entitled at idle period, is selected, the browser information is transmitted when the client computer 106 is idle, e.g., when the computer 106 enters a standby or hibernation mode. See, e.g., Bates, Ex. 1004, 11:6-8: In effect, the present invention preserves the current status of a browsing session to be resumed at another location. The broadest reasonable construction of discontinuing is terminating or otherwise stopping, with the ability to be resumed. Bates discloses a user performing tasks during a browsing session executing on a first client computer. Ex. 1004, 10:58-61; 10:61-11:1. The browsing session is discontinued because it is terminated on the first computer and can be restored (resumed) on the remote computer. Ex. 1003, 122; Ex. 1018, Bates also discusses sending browser information to a second device when the user shuts down a first client computer, or when the session on the first computer goes into an idle period. Ex. 1004, 7:66-8:5. Each of these actions is indicative of a session being suspended because the session is no longer active or running. Ex. 1003, 122; Ex. 1018, In these instances, Bates preserves the current status of a browsing session to be resumed at another location. Ex. 1004, 11:7-8. Because therefore discloses discontinuing said session on said first device. Ex. 1003, 122; Ex. 1018,

32 233 Claim 1 Bates 1[d] transmitting a session history of said first device from said first device to a session transfer module after said session is discontinued on said first device See, e.g., Bates, Ex at 4:61-62: In one embodiment, browser information includes information generated during a browsing session Id. at 4:67-5:6: Illustratively, browser information includes cache information (e.g., URLs to sites visited, cookies, etc.), keystroke actions, bookmarks, history list information (i.e., a listing of network addresses visited during the browsing session), browser configurations (e.g., font, color, background, screen sizing, display attributes and other user-configurable settings) and the like. (Emphasis added). Id. at 6:11-13: In some embodiments, all browser information may be limited to the information generated during a particular browsing session. Id. at 7:22-24: As described above, the browser information written to the buffer 242 may be limited to information collected during a single browsing session. Id. at FIG. 1, 4. Id. at 5:65-67: Selection of the checkboxes 402a k determines what browser information will be sent/received between two or more client computers 106. Id. at 9:27-30: At step 720, the browser information in the buffer 242 [of the first client computer] is transmitted to the remote client computer via the network 104 and the server 108 (FIG. 1). Id. at 3:40-43: Illustratively, the network 104 is the Internet and comprises a plurality of network servers 108 (including, for example, hyper text transfer protocol (http) servers). Id. at 3:51-53: For example, the server 102 may be a mail transfer agent (MTA) supporting simple mail transfer protocol (SMTP). Id. at 3:57-61: In another embodiment, the server 102 may transmit messages to a post office server (e.g., one of the network servers 108 of the network 104). The destination terminal 106 then uses a post office protocol (POP) to retrieve its messages from the post office server. 28

33 233 Claim 1 Bates Id. at 3:24-26: However, the invention contemplates any method or system (e.g., file transfer protocol (FTP) adapted to support the information processing described herein. (1) Bates discloses a session history. The browser information disclosed in Bates is a session history because it includes information generated during a browsing session. Ex. 1004, 4: In particular, Bates browser information is an account of actions taken by the user (i.e., a record) which may include: cache information (e.g., URLs to sites visited, cookies, etc.), keystroke actions, bookmarks, history list information (i.e., a listing of network addresses visited during the browsing session), browser configurations (e.g., font, color, background, screen sizing, display attributes and other user-configurable settings) and the like. Id. at 4:67-5:6. Furthermore, the browser information may be limited to information generated during a single browsing session. Id. at 6:11-13, 7: One of ordinary skill in the art would consider this browser information to constitute a record generated about a session because it is an account of actions taken by the user during a session. Ex. 1003, 122; Ex. 1018, (2) Bates discloses transmitting a session history to a session transfer module. Figure 4 of Bates illustrates that a user at a first client computer may select what to share, which may include all browser information. Ex. 1004, 29

34 6:8-11, FIG. 4. Selection of the checkboxes 402a k determines what browser information will be sent Id. at 5: Bates also discloses that the browser information in the buffer 242 [of the first client computer] is transmitted to the remote client computer via the network 104 and the server 108 (FIG. 1). Id. at 9: The network 104 includes network servers n. Id. at 3:40-43, FIG. 1. The transmission of the browser information may occur via SMTP, POP, or any method or system (e.g., file transfer protocol (FTP)) adapted to support the information processing described herein. Id. at 3:51-53, 3:57-61, 3: These protocols facilitate information transfer and rely on a client-server architecture, such as the network and servers, through which information is communicated. Ex. 1003, 99, ; Ex. 1018, The disclosed and network servers themselves, the software running the protocols, or the combination of the two meet the broadest reasonable construction of a session transfer module because they are hardware and/or software that participates in the transfer of the session. Id. at

35 (3) Bates discloses that the session history is transmitted after said session is discontinued on said first device. Figure 5 of Bates discloses that a user may choose when to send the browser information (i.e., the session history), including upon user request, at shutdown or at idle period : These time periods include time periods after discontinuation of the session on the first computer. At shutdown on the first computer, the session is discontinued because it would be stopped, but could be resumed. Ex. 1003, 122; Ex. 1018, A session entering an idle period on the first computer would also be discontinued because it would be stopped, but could be resumed. Id. Finally, the upon user request option of Bates allows for browser information transmission at any number of user-selected times, including after the session is discontinued on the first device. Id. 233 Claim 1 Bates 1[e] resuming said session on said second device with said session history. See, e.g., Bates, Ex at 10:65-11:8: The browser information is then used to reconfigure the browser program of the remote computer and restore the user to where he or she left off during the terminated browsing session. Thus, in the case of a user reading a message board, the browser displays the message which was being read when the browsing session was terminated. In the case of inputting data to a Web page, the Web page is rendered with the data that was input prior to the termination of the session 31

36 233 Claim 1 Bates contained therein. In effect, the present invention preserves the current status of a browsing session to be resumed at another location. Id. at FIG. 8. See also Ex. 1003, 122, pp ; Ex. 1018, Claim 23 Bates 23[p] 23. A computer readable storage medium on which is embedded one or more computer programs, said one or more computer programs implementing a method for redirecting a session, said one or more computer programs comprising a set of instructions for: See supra claim element 1[p]. See also Ex. 1018, Claim 23 Bates 23[a] conducting a session with a first device; See also Ex. 1018, See supra claim element 1[a]. 233 Claim 23 Bates 23[b] specifying a second device; See supra claim element 1[b]. See also Ex. 1018, Claim 23 Bates 23[c] discontinuing said session on See supra claim element 1[c] said first device; See also Ex. 1018,

37 233 Claim 23 Bates 23[d] transmitting a session history of said See supra claim element 1[d] first device from said first device to a session transfer module after said session is discontinued on said first device; See also Ex. 1018, Claim 23 Bates 23[e] resuming said session on said second See supra claim element 1[e]. device with said session history. See also Ex. 1018, B. Ground 2: The 233 Patent Claims 1, 4, 23 and 25 are obvious over Bates in view of Chan This ground is presented as an alternative to Ground 1 for claims 1 and 23 to the extent the Board concludes that Bates does not sufficiently disclose the session transfer module. Ground The cited reference combination discloses all limitations All elements of claim 1 and 23 are taught by Bates as explained above in 233 Claim 1 Bates in view of Chan 1[d] transmitting a session history of said first device from said first device to a session transfer module after said session is discontinued on said first device See, e.g., Chan, Ex at FIG

38 233 Claim 1 Bates in view of Chan See, e.g., Chan, Ex at 6-7 (emphasis added): Once the service, adaptation, and destination are decided, processing is performed by the service module. The service module plays the important role of providing the notion of a single application. For example, when Web browsing is transferred to a low-bandwidth network, an Internet service gateway can be used to provide an extremely primitive form of browsing over a messaging service. Similarly, two-way messaging service can be used as a substitute for service. In addition, management of states that are persistent per user, per application, or per session is also performed here. For example, in Web browsing persistent application states such as bookmarks, history, and cookies should be reserved when the user migrates to different devices; cache objects can migrate from server to device or vice versa. depending on the environment. Finally, common service semantics like notification, saving, printing, and transfer of messages is supported in a uniform way across all services. 34

39 233 Claim 1 Bates in view of Chan See, e.g., Chan, Ex at 6 (emphasis added): State Management - In a client/server service model, the application state is distributed between the client and the server. When a client moves from one device to another, the state management module carries out the application transfer functions, which include the following steps: Handshake between the source and destination devices Packaging of selected state information for transfer Transfer of state information from the source to the destination device Transparent restart of application in the destination using the transferred state Shutdown of the application in the source device. Chan discloses a session transfer module. Chan discloses multiple modules, including a service module and a statement management module, both of which participate in and facilitate session transfer between devices. Ex. 1005, pp The service module performs session information processing and serves as the pass through for the session state (i.e., session history) including bookmarks, history, and cookies when the user migrates devices. Id.; see also FIG. 4. The state management module carries out the application transfer functions including [p]ackaging of selected state information for transfer and [t]ransfer of state information from the source to the destination device. Id. at 6. 35

40 Because each of these modules participates in and facilitates session transfer between devices, the modules constitute a session transfer module both alone and in combination. Ex. 1003, 136, 60-61; Ex. 1018, Claim 4 Bates in view of Chan 4. The method according to claim 1, further comprising: accessing a device profile of said second device; and restructuring said session data to conform with said device profile of said second device. See, e.g., Bates, Ex at 10:65-11:8: The browser information is then used to reconfigure the browser program of the remote computer and restore the user to where he or she left off during the terminated browsing session. Thus, in the case of a user reading a message board, the browser displays the message which was being read when the browsing session was terminated. In the case of inputting data to a Web page, the Web page is rendered with the data that was input prior to the termination of the session contained therein. In effect, the present invention preserves the current status of a browsing session to be resumed at another location. See, e.g., Chan, Ex at 6 (emphasis added, bold in original): The Adaptation Layer - The primary goal of adaptation is to allow an application to run efficiently with the resources currently available to it. The highly dynamic nature of a wireless environment makes adaptation a necessity. As mentioned before, adaptation can be used to mitigate the effect of network and/or device handoffs. The upper adaptation layer... provides support for an application to manage its features, performance and data formatting in response to resource changes. It notifies an application of resources changes and helps set up new data paths upon application requests. Device- or mediaspecific processing such as transcoding is performed in this layer. See, e.g., Chan, Ex at 6: The data component is organized per user and resembles the organization of a client control plane. The per-user 36

41 233 Claim 4 Bates in view of Chan data component contains a device profile, a network profile, a state profile, and an object store. See, e.g., Chan, Ex at FIG. 4. Claim 4 involves restructuring the session (or the session data) so that it is compatible with the second computer. Chan teaches such restructuring via an adaptation layer. Ex. 1005, p. 6; Ex. 1003, 139. The primary goal of adaption is to allow an application to run efficiently over the resources that are currently available to it. Ex. 1005, p. 6. [A]daptation can be used to mitigate the effect of network and/or device handoffs. Id. The upper adaptation layer provides support for an application to manage its features, performance, and data formatting. Device-or media-specific processing such as transcoding is performed in this layer. Id. The server includes a data component and other modules adapt or transcode session information. The data component is organized per user The per-user data component contains a device profile, a network profile, a state profile and an object store. Id. The dispatch module makes three major decisions: which servers to invoke, what kind of adaptation to perform, if needed, and to which network to send the message. Id. The service module then adapts the content to the new device. Id. at 7. When a user changes devices, Chan discloses that the system adapts the session to the new device. Id. at 6-7. It is inherent, or at the very least obvious 37

42 that in order to adapt or transcode (i.e., restructure) the session data or session to conform with a particular device profile, the device profile must first be accessed. Ex. 1003, 139; Ex. 1018, Claim 23 Bates in view of Chan 23[d] transmitting a session history of said first device from said first device to a session transfer module after said session is discontinued on said first device See supra claim element 1[d]. This limitation is the same as the equivalent limitation in claim element 1[d] and also obvious over Bates in view of Chan. Ex. 1018, Claim 25 Bates in view of Chan 25. The computer readable storage medium See supra claim 4. according to claim 23, said one or more computer programs further comprising a set of instructions for: accessing a device profile of said second device; and restructuring said session to conform with said device profile of said second device. This limitation is the same as claim 4 above and is also obvious over Bates in view of Chan. Ex. 1018, One of skill in the art would be motivated to combine the references A person of ordinary skill in the art would have been motivated to combine Bates in view of Chan. Both Bates and Chan disclose a client-server architecture for transferring sessions between clients. Bates primarily focuses on the client 38

43 side. Bates discloses the use of servers, as well as certain protocols, including and FTP. Ex. 1004, 3:20-67, 9:27-30, FIG. 1. One of ordinary skill in the art would appreciate that these servers in conjunction with the disclosed protocols include both hardware and software that enable session transfer. Supra, pp , 27; Ex. 1003, 99; Ex. 1018, Bates also addresses the need to reformat session data such that sessions may be transferred between different clients running different browsers and the session may be continued. Ex. 1004, 11: Bates highlights that [i]t is understood that formatting processes may be performed regardless of compatibility between browser types. Id. at 11: Bates notes that [i]nterfacing two or more applications is well-known in the art. Accordingly, a detailed discussion of interfacing methods and apparatus is not necessary. Id. at 11: Thus, one of ordinary skill in the art would have been aware of and used prior art techniques like Chan s involving server-side implementation of session transfer between computers and that describe reformatting session data to aid session transfer amongst heterogeneous devices. Id. at 11:47-49; Ex. 1003, ; Ex. 1018, One of ordinary skill in the art would thus have been motivated to combine Chan with Bates. Id. at 134; Ex. 1018, Both Bates and Chan involve the same field: session transfer. Id. at 131; Ex. 1018, Both seek to solve the same problem: enabling a user to begin a session on one client and continue the session on another client. Id. Both 39

44 provide examples of web browsing sessions. Id. One of ordinary skill in the art could have combined the server and data formatting functionality of Chan with the system of Bates via known methods. Id. at 135; Ex. 1018, The results of the combination would have been predictable and obvious to one of ordinary skill in the art. Id. C. Ground 3: The 233 Patent Claims 1, 4, 23 and 25 are anticipated by Phan ICC As demonstrated below, claims 1, 4, 23 and 25 are anticipated by Phan ICC. This ground is presented as an alternative if the Patent Owner is able to antedate the Bates and/or Chan references. 233 Claim 1 Phan ICC 1[p] 1. A method See, e.g., Phan ICC, Ex. 1020, 3-4. for redirecting an on-going, See, e.g., Phan ICC, Ex. 1020, 3: software based 3 System Architecture session: 3.1 Background The infrastructure must evolve to allow users seamless access to data from any device on a variety of networks. An important challenge is to develop a middleware infrastructure to: (a) help bridge the gap between application servers and nomadic clients as they migrate active sessions among multiple devices users will be able to migrate ongoing application sessions seamlessly to multiple platforms that may range from a high performance diagnostic workstation in the physician s office to hand-held PDAs in the examination room. 3.2 Hardware Architecture The imash project will deploy a hardware and software infrastructure adapted to the healthcare domain. The planned hardware architecture is depicted in Figure 1 and consists of: 40

45 233 Claim 1 Phan ICC A set of application servers connected to a high bandwidth wired network. These machines are typically legacy servers that are not well suited to support multiple mobile clients. A collection of wired client devices that includes office workstations, clinic stations, imaging equipment, etc. High bandwidth wireless access within the hospital, augmented by one or more lower bandwidth wide area wireless systems, supporting a number of heterogeneous mobile client devices that can vary from laptop to graphical tablet to PDA. A set of strategically deployed, dedicated middleware servers. The key to the imash architecture is the distributed set of middleware servers, which when viewed at the application level, interconnect all applications and clients. Requests from clients are explicitly addressed to nearby middleware servers; these middleware servers are the source for all services for clients, simplifying service discovery, as well as the sole client for application servers.middleware takes responsibility for getting the data from the right servers, and makes necessary conversion to fit the clients needs. As shown in Figure 2, middleware servers provide the following functionality: Presentation conversion. Middleware servers fetch data based on user requests (or pre-fetch data based on prediction of user s near-future need) and perform conversion as needed. Session handoff. When a user moves an on-going application session from one device to another, 41

46 233 Claim 1 Phan ICC middleware servers act as a home for the application state (including active connections, cached data, etc.) to facilitate migration between devices. User re-authentication. When a user changes devices or spawns a new branch of a session to a new device, the middleware server authenticates the user on the new device. In this paper we focus on the issue of session data transfer while conserving the rest for future work. 3.3 Software Architecture Inserting the middleware servers simply forces all communication through the middleware servers with no outof-band data sent directly between application server and client. Therefore, to the servers, the middleware layer must appear to be a client system, and likewise, the middleware layer must appear to be an application server to the clients. See, e.g., Phan ICC, Ex. 1020, 4: Our case study involves Mozilla [9], an open-source web browser based on Netscape Communicator 5.0 that is available from the Free Software Community with the support of Netscape/AOL. We have been working on Mozilla R15 on Windows NT 4.0 SP5. The end result of our implementation is a seamless web-browsing session experienced by the user even after he or she has moved from one machine to another. When the user wishes to migrate to another platform, the browser s session state is accordingly moved as well From this nascent experience withmozilla, we can: (2) establish baseline performance metrics and upper-bounds on session state transfer times See, e.g., Phan ICC, Ex. 1020, Fig. 2: 42

47 233 Claim 1 Phan ICC Phan discloses a method for session transfer and Software Architecture running on clients computers and servers (i.e., a computer readable medium) for the purpose of effecting an application session transfer (i.e., a software-based session). Ex. 1020, 3-4; Ex. 1018, Claim 1 Phan ICC 1[a] conducting a session with a first device; 1[b] specifying a second device See, e.g., Phan ICC, Ex. 1020, 3 (excerpted supra at element 1[p]): See, e.g., Phan ICC, Ex. 1020, 4.1: 4.1 Implementation Issues The MARC and middleware processes can be implemented using a variety of possibilities. Ideally, a good-performance, off-the-shelf software package that provides service lookup and distributed communication would be leveraged. A number of options, such as LDAP [16], Jini [15], and RFC [14] implementations, can provide service lookup. Likewise, CORBA, Java Remote Method Invocation (RMI), and several message-passing libraries are available for 43

48 233 Claim 1 Phan ICC implementing distributed transactions.... For Mozilla, we consider a session state to be the bookmark list, the history file, the user preferences, and the cache of web pages. In fact, this state can be used by any number of heterogeneous web browsers so long as they are outfitted with our MARC. A session transfer in our implementation involves the following sequence. 1. The user starts the client application and provides it with a unique user id. 2. The MARC within the application discovers and contacts the middleware server using Jini and begins a new session using the user id. The last saved state, if it exists, is retrieved from the middleware server. This step uses Java RMI to acquire the most recently saved bookmarks, history, and user preferences, all of which are stored on and transported from the middleware as serialised Java Objects. 3. The returned data from the middleware is received by the MARC and then incorporated into the client before the user s current interactive application session begins. Within Mozilla, the data is deserialised by the MARC and then read into Mozilla s bookmark, history, and user preference dataspace. Web pages are retrieved on-demand from the middleware server using a standard proxy protocol communicating with a middleware component executing the Squid [11] webpage proxy cache. 4. As the user changes the current session state, the state is updated at the middleware server at the appropriate times. For example, whenever Mozilla flushes the bookmarks to disk, our MARC will also transmit this data to the middleware via RMI. 5. When the user exits the session, the client updates the state at the middleware. Because Mozilla flushes all data upon exiting, our MARC likewise updates data on the middleware. 44

49 As to the first device of this element, Phan ICC discloses running an ongoing application session (i.e., a session) on a variety of devices such as an office desktop, a PDA, a laptop, and a home desktop (i.e., a first device). Phan ICC also discloses a second device (such as a different laptop, desktop or PDA) that is identified or specified when a user logs on to or starts a new device to continue the session. Phan ICC, Ex. 1020, 4.1; Ex. 1018, 85. For example, Phan ICC discloses that [w]hen a user changes devices or spawns a new branch of a session to a new device, the middleware server authenticates the user on the new device. Id. 233 Claim 1 Phan ICC 1[c] discontinuing said session on said first device, See, e.g., Phan ICC, Ex. 1020, 4.1 (excerpted supra at elements 1[a] and 1[b]): See, e.g., Phan ICC, Ex. 1020, Abstract (bold in original): Personal computing on mobile platforms such as laptops and personal digital assistants, rather than in a traditional desktop environment, is becoming increasingly more common. In this paper we address the issue of application session transfer for uninterrupted data access across this diverse range of platforms. We have developed a tiered architecture that includes a middleware server layer positioned between existing application servers and multiple clients to make session transfer transparent to the user. Any client application executing our Middleware-Aware Remote Code library can save and restore its session by interacting with a middleware server. As a proof of concept, we have implemented the transfer of bookmarks, history, web cache, and user preferences with the Mozilla open source web browser. From this effort we have established baseline performance metrics and have found that the overhead is within reasonable bounds of just a few seconds of latency. 45

50 Phan ICC discloses that a user exits a session: [w]hen the user exits the session Ex. 1010, 4.1; Ex. 1018, 87. Phan ICC also discloses restoring the session on another device. Id. The exiting in Phan ICC is discontinuing as claimed because the session on the first device is terminated or otherwise stopped and capable of being resumed. Ex. 1018, Claim 1 Phan ICC 1[d] transmitting a session history of said first device from said first device to a session transfer module after said session is discontinued on said first device See, e.g., Phan ICC, Ex. 1020, 3, 4 (excerpted supra at element 1[p], 1[a] and 1[b]): See, e.g., Phan ICC, Ex. 1020, Fig. 2: (1) Phan ICC discloses a session history. Phan ICC teaches a session state (i.e., a session history), which for Mozilla, is defined to include the bookmark list, the history file, the user preferences, and the cache of web pages. 46

51 Ex. 1020, 4.1; Ex. 1018, 88. This state is session history, i.e., a record generated about a session because it includes information concerning the actions taken by the user during a browsing session. Id. (2) Phan ICC discloses transmitting a session history to a session transfer module. The session history is transmitted to a middleware server containing software modules (i.e., a session transfer module). Ex. 1020, 3, 4.1, FIG. 2; Ex. 1018, 88. As shown in Figure 2 of Phan ICC, the middleware server includes a variety of software modules includes Session Migration, Management & State Caching. Id. When a user moves an on-going application session from one device to another, middleware servers act as a home for the application state (including active connections, cached data, etc.) to facilitate migration between devices. Ex. 1020, 3.2; Ex. 1018, 88. When the user wishes to migrate to another platform, the browser s session state is accordingly moved as well. Ex. 1020, 4; Ex. 1018, 88. (3) Phan ICC discloses that the session history is transmitted after said session is discontinued on said first device. When the user exits the session, the client updates the state at the middleware. Because Mozilla flushes all data upon exiting, our MARC [Middleware-Aware Remote Code] likewise updates data to the middleware. Ex. 1020, 4.1; Ex. 1018; Claim 1 Phan ICC 1[e] resuming See, e.g., Phan ICC, Ex. 1020, Abstract (bold in original): 47

52 233 Claim 1 Phan ICC said session on Personal computing on mobile platforms such as laptops said second and personal digital assistants, rather than in a traditional device with said desktop environment, is becoming increasingly more session history. common. In this paper we address the issue of application session transfer for uninterrupted data access across this diverse range of platforms. We have developed a tiered architecture that includes a middleware server layer positioned between existing application servers and multiple clients to make session transfer transparent to the user. Any client application executing our Middleware-Aware Remote Code library can save and restore its session by interacting with a middleware server. As a proof of concept, we have implemented the transfer of bookmarks, history, web cache, and user preferences with the Mozilla open source web browser. See, e.g., Phan ICC, Ex. 1020, 3, 4 (excerpted supra at element 1[p]). Phan ICC teaches session transfer from a first client to a second client in which any client application can save and restore its session by interacting with the middleware server. Ex. 1020, Abstract; Ex. 1018, 89. Phan ICC teaches that the session state (including the bookmark list, history file, user preferences, etc.) is moved from the middleware server to the second client and used to restore the session on the second client. Ex. 1020, 3.2, 4.1; Ex. 1018, Claim 4 Phan ICC 4. The method according to claim 1, further comprising: accessing a device See, e.g., Phan ICC, Ex. 1020, 3 (excerpted supra at element 1[p]). See, e.g., Phan ICC, Ex. 1020, Fig. 2: 48

53 233 Claim 4 Phan ICC profile of said second device; and restructuring said session data to conform with said device profile of said second device. Phan ICC includes middleware servers to perform session handoff. Ex. 1020, FIG. 2, 3.2; Ex. 1018, 92. One functionality that is provided by the middleware servers is [p]resenation conversion [where] middleware servers fetch data based on user requests (or pre-fetch data based on prediction of user s near-further need) and perform conversion as needed. Ex. 1020, 3.2; Ex. 1018, 92, Claim 23 Phan ICC 23[p] A computer readable storage medium on which is embedded one or more computer programs, said one or more computer programs implementing a method for redirecting a session, said one or more computer programs comprising a set of instructions for: See supra claim element 1[p]. As shown above, this is disclosed by Phan ICC. Ex. 1018,